Amgen Inc. v. F. Hoffmann-LaRoche LTD et al Doc.

1312
Case 1:05-cv-12237-WGY Document 1312 Filed 10/04/2007 Page 1 of 3

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

AMGEN INC., )
)
Plaintiff, )
)
v.
) Civil Action No. 05 CV 12237 WGY
F. HOFFMANN-LAROCHE LTD., )
a Swiss Company, ROCHE DIAGNOSTICS )
GMBH, a German Company, and )
HOFFMANN LAROCHE INC., a New )
Jersey Corporation, )
)
Defendants. )
)

DECLARATION OF STEVEN M. ODRE IN SUPPORT OF

AMGEN INC.’S MOTION TO CORRECT THE FILE HISTORY
OF THE ‘868 PATENT BY ADDING A DOCUMENT THAT WAS MISSING

I, Steven M. Odre, based on my own personal knowledge do hereby declare under

penalty of perjury as follows:

1. I am currently a Special Advisor for Amgen Inc.

2. During the relevant time period, in 1988, I was employed as Vice President of

Intellectual Property and Associate General Counsel for Amgen Inc.

3. In connection with my position, I was actively involved in the prosecution of the

‘868 patent and am, therefore, familiar with the prosecution file history of this patent.

4. On or about May 24, 1988 Amgen Inc. submitted a Second Preliminary

Amendment (the “Amendment”) to the Patent Office in connection with its application on the

‘868 patent. The Amendment is stamped received from by Patent Office on June 1, 1988. A

true and accurate copy of the Amendment is attached hereto as Exhibit 1.

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5. The Amendment indicated that it had attached to it Exhibit E, which contained a

search of prior art conducted by Amgen Inc. Exhibit “E” contained red “x” marks made by

Amgen Inc.’s counsel to indicated the relevant references.

6. On or about July 27, 1988, the Patent Office issued an Office Action, which

indicated, among other things, that “The search reports said to accompany exhibit E have not

been found in the file” contained at the Patent Office. A true and accurate copy of this Office

Action is attached hereto as Exhibit 2.

7. Thereafter, a review of the file maintained by Amgen Inc.’s counsel was

conducted and Exhibit E (the search reports) was located in their file. A true and accurate copy

of Exhibit E is attached hereto as Exhibit 3.

8. On or about September 27, 1988, I, on behalf of Amgen Inc., submitted to the

Patent Office a reply to the Office Action (the “Reply”). I caused to be attached to the Reply a

copy of Exhibit E, the search report that the Patent Office had indicated was missing from its

file. A true and accurate copy of the Reply is attached hereto as Exhibit 4.

9. I have reviewed the document attached hereto as Exhibit 3 and it is the search

report that was Exhibit E on the Amendment. .

Date: October 4, 2007 /s/ Steven M. Odre

Steven M. Odre

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CERTIFICATE OF SERVICE

I hereby certify that this document, filed through the ECF system will be sent

electronically to the registered participants as identified on the Notice of electronic filing and

paper copies will be sent to those indicated as non-registered participants on October 4, 2007.

/s/ Michael R. Gottfried

Michael R. Gottfried

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